David West (T/A Eastenders) v Fuller Smith & Turner Plc (2003)
A challenge to the trade mark "ESB" in respect of beer on grounds of lack of distinctive character failed, but since the mark was only used in relation to bitter the scope of the mark was restricted accordingly by way of partial revocation for non-use.
Appeal and cross-appeal from the judgment of Christopher Floyd QC rejecting a challenge to the validity of the registered trade mark "ESB" belonging to the defendant brewer ('Fullers'), but ordering its revocation in respect of all goods except bitter beers. The mark was registered in 1988 in respect of beers included in class 32. The use of the mark had been restricted to bitter. The claimant ('W') alleged that the mark offended against s.3(1)(b), (c) and (d) Trade Marks Act 1994, because the letters ESB were devoid of distinctive character, were a common abbreviation for "extra strong (or special) bitter" and had become customary in the trade, and had not acquired distinctiveness. W also alleged that since the mark had only ever been used for bitter, the scope of the registration should be restricted accordingly by partial revocation under s.46 of the 1994 Act. The trial judge rejected the objection under s.3. He held that at the date of registration consumers would understand Fullers' use of the initials ESB in a trade mark sense. The average consumer would not view the initials as consisting exclusively of an indication of the kind or quality of the beer. ESB was not a customary term in the trade. W appealed on the issue of distinctiveness and Fullers cross-appealed on the partial revocation for non-use except in respect of bitter. The issues were: (i) whether the mark ESB was invalid under s.3; and (ii) whether the judge was right to order partial revocation for non-use.
(1) If at the date of registration the mark served as a trade mark to the interested public, as the judge held it in fact did, then it could not be regarded as devoid of any distinctive character under s.3(1)(b). The judge correctly held that the mark would only offend against s.3(1)(b) if it was devoid of distinctive character in 1988 and that would only be the case if the average consumer knew that the sign ESB was used exclusively as an indication of the kind or quality of the goods or was in common use which it was not. Section 3(1)(c) did not present a high hurdle for the applicant to surmount. Applying Case C-473/01 P - Procter & Gamble v Office for Harmonisation in the Internal Market (OHIM) (2002) ETMR 22 and Case C-191/01 P - Wm Wrigley Jr Co v Office for Harmonisation in the Internal Market (OHIM) (2001) ETMR 623 the judge in the present case was entitled to find that while the mark had, for some, a descriptive connotation it had in addition a distinctive character. A mark could be both descriptive, in that it communicated a message as to the trade origin of the goods to which it was applied, and simultaneously convey a clear description of those goods. It was irrelevant that the initials ESB might have a descriptive connotation to some. They were not exclusively descriptive and the opposition under s.3(1)(c) failed. The descriptive content of the mark did not have to be "displaced" or "lost". The decision in Healing Herbs v Bach Flower Remedies Ltd (2000) RPC 513 to that extent could not stand with the decision in Case C-299/99 - Philips Electronics NV v Remington Consumer Products Ltd (2002). The Court of Appeal would not interfere with the judge's decision that ESB was not a customary term. The judge was right that the mark was not objectionable under s.3(1) in 1988 and that Fullers did not have to rely on the proviso to s.3 to obtain registration on the ground of acquired distinctiveness. (2) The judge was entitled to find that the relevant consumers were accustomed to seeing lager and bitter bearing different marks and that since ESB had only ever been used by Fullers in respect of bitter beer the specification should be restricted to bitter beer by way of partial revocation under s.46(1) (Thomson Holidays Ltd v Norwegian Cruise Line Ltd (2002) EWCA Civ 1828 applied).